International Issues; Remedies Intro to IP – Prof Merges

Agenda International copyright protection Remedies – especially damages

International Copyright History Current situation

History US a net infringer (“pirate nation”) through the 19 th century? – Famous complaints of Dickens, Gilbert & Sullivan, et al. Finally resolved in late 20 th century: TRIPS/Berne movement

Current situation No formalities required for foreign works Berne permits uneven treatment

Sheldon v. MGM Play: Dishonored Lady Movie: Letty Lynton

Madeleine Smith & Scottish murder case

Chief Justice Hughes

Relative contributions Infringing material Original initiative of the infringer How to handle relative contributions?

Common public domain source: idea/expression [T]he general skeleton was already in the public demesne. A wanton girl kills her lover to free herself for a better match; she is brought to trial for the murder and escapes.

IPNTA 5 th p. 727 From comparison and analysis, the Court of Appeals concluded that they had ‘‘deliberately lifted the play’’; their ‘‘borrowing was a deliberate plagiarism.’’ It is from that standpoint that we approach the questions now raised.

Infringement analysis Common source – public domain (basis story) Play: specific incidents, characters, details Movie: Use Nicholls (“levels of abstraction”) test; here – infringement found

Relative Contributions Respondents contend that the material taken by infringement contributed in but a small measure to the production and success of the motion picture. They say that they themselves contributed the main factors in producing the large net profits. IPNTA 5 th at 727

The court thought an allowance to petitioners of 25 percent of these profits ‘‘could be justly fixed as a limit beyond which complainants would be receiving profits in no way attributable to the use of their play … District Court awarded all the net profits to petitioners, feeling bound by the decision of the Court of Appeals in Dam v. Kirk La Shelle Co., 175 F. 902, 903, a decision which the Court of Appeals has now overruled.

Purpose of copyright damages The purpose is thus to provide just compensation for the wrong, not to impose a penalty by giving to the copyright proprietor profits which are not attributable to the infringement.

Restitution principle Where there is a commingling of gains, he must abide the consequences, unless he can make a separation of the profits so as to assure to the injured party all that justly belongs to him. When such an apportionment has been fairly made, the copyright proprietor receives all the profits which have been gained through the use of the infringing material and that is all that the statute authorizes and equity sanctions. – IPNTA 5 th 729

But beware: problems of proof! “... When such an apportionment has been fairly made...”